There have been very few incidents in India wherein the dispute is related to a political party's name. After the 2014 Lok Sabha elections we all are a witness as to how political parties endorse, advertise and use their name as a brand and enjoy a similar status as that of a Trademark. People recognize and relate the services and identity of a political party and its people through its name. A recent case on the point may be Bharatiya Janta Party (BJP) versus Iahead, Vainay KM/ WhoisGuard/Namecheap.com/Enom Inc.1 In the present case, the Complainants, BJP lodged a complaint in the WIPO Arbitration and Mediation center against Bharath Journals and Publishers Team for infringement of their domain name "bjp.com".
FACTUAL BACKGROUND & CONTENTIONS:
Bharatiya Janta Party, earlier named as Bharatiya Jana Sangh was
established in the year 1951 and was one of the four nationally
recognized parties in the first general elections in India. The
complainant BJP in its complaint stated that it is the owner of
various domain names like
- The first respondent has used a privacy shield to conceal its identity.
The disputed domain name
was directly linked to the website of its rival party and the title of the page displayed "All India Congress Committee" (AICC).
The Complainants also submitted that a general internet search conducted in 2010 of the name "Bharath Journals and Publishers" immediately directs to the Indian National Congress's website. However, the hyperlink to the Indian National congress's website was removed in 2011. As contended by the Complainants, the hyperlink stopped after a Notice was served on them. The Complainants also furnished the printouts of the search dated 2010 as an evidence.
The Respondent argued that mere assertion of bad faith is not enough and the Complainants have not produced any evidence of the same. Further, the Respondents also contended that the usage of a three letter abbreviation does not confer any trademark right in favor of the Complainants. The Respondents submitted that they have been carrying on their Publication House since past many years and the domain name was thus registered in good faith.
FINDINGS OF THE PANEL
The Panel considered various aspects of the Complaint. As per the paragraph 4 (a) of the UDRP (Uniform Domain name Dispute Resolution Policy), a Complainant has to establish three elements to proof whether there is an actual infringement or not-
- Whether the disputed mark is Identically or Confusingly similar – The Complainants provided various documents as evidences to show the extensive media coverage, unsolicited media references and published news reports referring to the Complainants as BJP on various occasions. The Complainants further provided various evidences that included documents showing that the mark is widely used by the general public and independent commentators who refer to the Complainants with the abbreviation BJP only. The Panel after examining all the evidences put forth concluded that the trademark BJP is a well known mark in connection with the Complainant and they have established common law rights in their favor. Therefore, the Respondent's mark is confusingly similar to the Complainant's mark.
- Whether the Respondents lack Rights or Legitimate Interests- The Complainants contended that the Respondents have not performed any legitimate use of the domain name and hence they do not have any valid interest over the same. The onus of proving the same was on the Respondents. It was found that the Respondents have not made any use of the domain name between the years 1997 to 2008 and the Panel inferred from this that the Respondents passively held the domain name in this period. The Respondents submitted that they were planning to carry on business once this dispute is settled. But, the Panel held that mere assertion of a contemplated business plan is not sufficient to establish rights and legitimate interests.
Whether the mark was registered and used in bad
faith- The evidence on record showed that the adoption of
the domain by the Respondent was much later to the date on which
the Complainant's mark came into existence. Further, the
Respondent argued that they were not aware of any link on their
website which directs to the Congress's website. This
contention of the Respondents was unacceptable as it is very
unlikely that the Respondents were carrying on the business and the
link went unnoticed by them. Therefore, the Registration was said
to be in bad faith. On the basis of all the above reasons and
findings the Panel transferred the domain name
in the name of the Complainants.
The BJP's case has brought forth an example of possible threats for the political parties and consequences which may arise if the IP assets are not handled with extra cautiousness and vigilance. More will be the advent of technology and new techniques, more will be the need of protecting the Intellectual Properties.
1. 2014 (57) PTC 325 [WIPO]
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